USPTO Patents Application 10723894

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 20

REMARKS

In response to the Appeal Brief previously filed by Applicants on November 19,
2007, the Examiner stated that Applicants' arguments were persuasive and reopened
prosecution of the presently pending patent application. In the present Office Action, the
Examiner maintained the previous grounds of rejection with regard to claims 1-24 and set
forth a new ground of rejection with regard to claims 25-32. Claims 1-32 remain
pending. Reconsideration and allowance of all pending claims are respectfully requested.

Amendments to the Drawings

As discussed above, the submitted replacement drawing sheet is provided to
replace the original drawing sheet labeled "1/5." In particular, Applicants note that
reference numeral 42 was used in Fig. 1 to reference both an electrical sensor and the box
labeled "Non-electrical Motion Determination System." The attached replacement sheet
correctly references the "Non-electrical Motion Determination System" via reference
numeral 44. Applicants apologize for this minor error. Moreover, Applicants
respectfully submit that this replacement sheet does not add any new matter and is fully
supported by the specification. See e.g., Application, page 12, lines 6-12.

Double-Patenting

In the Office Action, the Examiner provisionally rejected claims 1-16 on the
ground of non-statutory obviousness-type double patenting as being unpatentable over
claims 1-8 and 17-24 of copending Application No. 10/723,857. The Examiner also
provisionally rejected claims 17-32 on the ground of non-statutory obviousness-type
double patenting as being unpatentable over claims 17-32 of copending Application No.
10/723,857, in view of Rogers (US Patent No. 5,477,144). In view of the provisional
nature of this rejection, no response is believed necessary at this time.

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 21

Claim Rejections Under 35 U.S.C. §102

In the Office Action, the Examiner rejected claims 1-8 under 35 U.S.C. § 102(e) as
being anticipated by Larson et al., U.S. Pending Publication No. 2004/0155653 Al
(hereafter "the Larson reference"). Applicants respectfully traverse these rejections.

Legal Precedent

Anticipation under Section 102 can be found only if a single reference shows
exactly what is claimed. See Titanium Metals Corp. v. Banner, 227 U.S.P.Q. 773 (Fed.
Cir.1985). For a prior art reference to anticipate under Section 102, every element of the
claimed invention must be identically shown in a single reference. See In re Bond, 15
U.S.P.Q.2d 1566 (Fed. Cir.1990). That is, the prior art reference must show the identical
invention "in as complete detail as contained in the ... claim" to support a prima facie
case of anticipation. Richardson v. Suzuki Motor Co., 9 U.S.P.Q. 2d 1913, 1920 (Fed.
Cir. 1989) (emphasis added). Thus, for anticipation, the cited reference must not only
disclose all of the recited features but must also disclose the part-to-part relationships
between these features. See Lindermann Maschinenfabrik GMBH v. American Hoist &
Derrick, 221 U.S.P.Q. 481, 486 (Fed. Cir. 1984). Accordingly, the Applicants need only
point to a single element or claimed relationship not found in the cited reference to
demonstrate that the cited reference fails to anticipate the claimed subject matter. A strict
correspondence between the claimed language and the cited reference must be
established for a valid anticipation rejection.

Moreover, the Applicants submit that, during patent examination, the pending
claims must be given an interpretation that is reasonable and consistent with the
specification. See In re Prater, 162 U.S.P.Q. 541, 550-51 (C.C.P.A. 1969); In re Morris,
44 U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997); see also M.P.E.P. §2111 (describing the
standards for claim interpretation during prosecution). Indeed, the specification is "the
primary basis for construing the claims." See Phillips v. AWH Corp., 415 F.3d 1303,
1315 (Fed. Cir. 2005). It is usually dispositive. See id. Interpretation of the claims must

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 22

also be consistent with the interpretation that those skilled in the art would reach. See In
re Cortright, 49 U.S.P.Q.2d 1464, 1468 (Fed. Cir. 1999); see also M.P.E.P. §2111. That
is, recitations of a claim must be read as they would be interpreted by those of ordinary
skill in the art. See Rexnord Corp. v. Laliram Corp., 60 U.S.P.Q.2d 1851, 1854 (Fed. Cir.
2001); see also M.P.E.P. §2111.01. In summary, an Examiner, during prosecution, must
interpret a claim recitation as one of ordinary skill in the art would reasonably interpret
the claim in view of the specification. See In re American Academy of Science Tech
Center, 70 U.S.P.Q.2d 1827 (Fed. Cir. 2004).

Independent Claims 1-8

Independent claims 1-8 are directed towards various methods and systems, as well
as computer readable media storing a computer program, all of which reflect various
embodiments of the present invention. Applicants note, however, that claims 1-8 each
commonly recite the acquisition of image data and the acquisition of motion data for two
or more organs using sensor-based measurement systems, which may comprise either
electrical or non-electrical sensors. Claims 1-8 further recite that two or more
retrospective gating points and one or more motion compensation factors are extracted
from the motion data acquired using the sensor-based systems. These features do not
appear to be disclosed by the Larson reference.

Sensor-Based Acquisition of Motion Data for Two or More Organs

Applicants note that the Larson reference generally describes the use of image-
based devices to derive motion data, specifically a magnetic resonance (MR) imaging
device. See Larson, Abstract, paragraphs 10, 14, 25, and 35. The Larson reference also
briefly mentions the use of an electrocardiogram (ECG - a well known type of sensor) for
acquiring cardiac motion data. Although it is unclear as to whether the Larson reference
purports to teach that the disclosed MR imaging device may be used for purposes other
than cardiac imaging, even assuming that the Larson reference may disclose the imaging
of other organs, Applicants note that the Larson reference would, at best , only disclose

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 23

that motion data for one organ (e.g., other than a heart) is acquired using an imaging
device (MR imager), and that motion for a second organ (e.g., the heart) is acquired using
a sensor (e.g. the ECG). It does not appear, however, that the Larson reference discloses
motion data for two organs is acquired using sensor-based techniques.

In rejecting claims 1-8, however, the Examiner has persistently alleged that an
MR imaging system constitutes a sensor. As Applicants have previously stressed, the
present application draws a clear distinction between image-based and sensor-based
systems for acquiring motion data and, therefore, one of ordinary skill in the art
interpreting the claims in view of the present specification would not interpret the recited
sensors to be the equivalent of an imaging system. For example, the present application
clearly sets forth that motion data may be derived by using either an imaging system ,
such as an MR system, CT system, or X-ray system (e.g., by analyzing the image data
itself in various domains) or, alternatively, by using a sensor-based system , which may
include electrical sensors (e.g., one or more ECGs, vector cardiography system) and/or
non-electrical or mechanical sensors (e.g., accelerometers, optical markers, displacement
sensors, forced sensors, ultrasonic sensors, strain gauges, pressure sensors, and
photodiodes), typically in the form of a pad or contact that may be disposed on the skin of
a patient. See Application, page 10, line 21 to page 12, line 12. In other words, the
specification clearly sets forth that the acquisition of motion data using sensor-based
techniques is distinct from those that utilize the image data itself.

In view of the clear distinction between image-based and sensor-based techniques
for measuring motion data, Applicants believe that the Examiner's interpretation in
correlating the MR imager of Larson to the recited "electrical sensor" of the claims is not
only unreasonable, but that the Examiner has misapplied long standing legal precedent
stating that pending claims must be given an interpretation that is reasonable and
consistent with the specification, and that the interpretation must be what those skilled in
the art would reach. See In re Prater, 162 U.S.P.Q. 541, 550-51 (C.C.P.A. 1969); In re

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 24

Morris, 44 U.S.P.Q.2d 1023, 1027-28 (Fed. Cir. 1997); see also In re Cortright, 49
U.S.P.Q.2d 1464, 1468 (Fed. Cir. 1999); see also M.P.E.P. §2111. To the contrary, it
appears the Examiner is implying that the specification should not be used in interpreting
claim language, a view that is not only improper, but also in direct contrast with the
established case law. For example, the Examiner, in responding to these points, has
repeatedly suggested, erroneously, that reference to the specification in interpreting claim
language constitutes improperly importing limitations from the specification into the
claims. See Office Action, page 2; see also Final Office Action mailed 6/20/2007, page
2. In the present Office Action, the Examiner has specifically asserted a dictionary entry
defining "sensor" as "a device that responds to a physical stimulus . . . and transmits a
resulting impulse . . ." as being the broadest reasonable interpretation of this term. Office
Action, page 2. Applicants submit that the Examiner's presumption that a dictionary
definition is superior to the teachings of the specification itself is clearly misguided,
improper and unreasonable in view of its open hostility to the teachings of the
specification.

In particular, Applicants reemphasize that the Federal Circuit, sitting en banc,
recently provided a summary and additional guidance regarding the proper interpretation
of claims in view of the specification. See Phillips v. AWH Corp., 75 U.S.P.Q.2d 1321
(Fed. Cir. 2005) (en banc). In Phillips, the Federal Circuit again emphasized the primacy
of the specification in claim interpretation. Particularly, the Phillips court noted that the
specification "is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term" Phillips, 75
U.S.P.Q.2d at 1327 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)) (emphasis added). Moreover, the court also noted that:

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 25

Ultimately, the interpretation to be given a term can only be
determined and confirmed with a full understanding of
what the inventors actually invented and intended to
envelop with the claim. The construction that stays true to
the claim language and most naturally aligns with the
patent's description of the invention will be, in the end, the
correct construction.

Phillips, 75 U.S.P.Q.2d at 1328-29 (quoting Renishaw PLC v. Marposs Societa'
perAzioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)) (emphasis added).

With the foregoing and controlling case law in mind, the Applicants remind the
Examiner that, as clearly set forth in the present application, the acquisition of motion
data using sensor-based techniques is distinct from those techniques that utilize the image
data itself. See Application, Figs. 1-2, page 10, line 21 to page 11, line 12 to page 15, line
9. In view of the clear distinction drawn between image-based and sensor-based
techniques for measuring motion, as set forth in the specification, no reasonable
construction of claims 1-8 based on the specification could interpret the recited sensor-
based approaches to encompass techniques where motion data is acquired from the image
data, as generally disclosed in the Larson reference. Certainly, the mere fact that an MR
imaging system runs on electricity or the fact that an MR imaging system may be
composed of a plurality of RF coils (which the Examiner erroneously argues as being
sensors) for acquiring the imaging data does not make the MR imaging system an
electrical sensor, as described in the cited passages of the application. Hence, no
reasonable construction of the claim 1-8 could logically equate an MR imaging system, as
disclosed in the Larson reference, with an electrical sensor as described in the present
application. Indeed, the Examiner's assertion of such equivalence, in clear contrast to the
plain teachings of the specification of the present application noted above, appears
disingenuous.

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 26

This point is further evidenced by the plain language of the claims in question.
For example, independent claims 1-8 each recite the acquisition of image data (or the
means for acquiring such image data) as being separate from the acquisition of motion
data by the recited electrical or non-electrical sensors. Claims 5 and 6 recite means for
acquiring image data that are separate and distinct from the means for acquiring motion
data. Claims 7 and 8 further recite an imager separately from a sensor-based motion
measurement system . Indeed, the separate recitations of motion and image data (or,
correspondingly, of sensor-based motion measurement systems and imagers) would
appear to preclude interpreting an MR imaging system, as recited in the Larson reference,
as acquiring motion data or of being the equivalent of a sensor-based motion
measurement system.

Further, even assuming, arguendo, that the MR imager of Larson could constitute
a sensor, the Examiner has still failed to properly correlate the recited "motion data" and
"image data" of claims 1-8 to respective corresponding elements in the Larson reference.
As discussed above, each of the claims recites the acquisition of image data as being
separate from the acquisition of motion data. It is well established case law that for a
prior art reference to anticipate under Section 102, every element of the claimed invention
must be identically shown in a single reference. See In re Bond, 15 U.S.P.Q.2d 1566
(Fed. Cir.1990). Therefore, if the Examiner intends for the image data acquired by the
MR imager of Larson to constitute as a sensor for acquiring motion data for one of the
recited two or more organs, the Examiner would be unable use the MR imager to
concurrently satisfy the step of "acquiring a set of image data," as is generally required by
each of these claims

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
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Extracting Retrospective Gating Points from the Motion Data Acquired via Sensors

Applicants further submit that the Larson reference does not appear to teach or
suggest extracting two or more retrospective gating points based upon motion data
acquired from sensors, as generally recited by each of the pending claims. Through out
the prosecution of the present application, the Examiner has continually maintained that
the Larson teaches the extraction of "timing information," which allegedly correspond to
retrospective gating points. See Larson, paragraph 17. However, contrary to the
recitations of claims 1-8, the disclosed "timing information" is not extracted from motion
data.

The Larson reference is generally directed towards a technique for overcoming
interference in ECG signals which may result from magnetic field interference when
ECGs and MR imaging systems are used in conjunction with one another. In particular,
the Larson reference discloses a technique which overcomes these drawbacks by
acquiring timing signals directly from the image data itself. Paragraph 17 of the Larson
reference notably summarizes a technique for extracting the above discussed "timing
information" from k-space image data. See generally, Larson, paragraph 17.
Specifically, the cited reference notes that "[t]he timing information may be extracted
from a selected region of the low-resolution image ." Id. It is this extracted timing
information which may be used to subsequently retrospectively synchronize the MR
imaging data with the motion of the target organ. See Larson, paragraph 19.

Therefore, even if the disclosed "timing information" could be interpreted as a
"gating point," the Larson reference clearly states that the timing information is extracted
from imaging data , not from motion data, as would be required to anticipate claims 1-8.
Accordingly, the Examiner's Section 102 rejection of claims 1-8 is believed to be
improper for this additional reason.

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 28

Motion Compensation Factors

Applicants further assert that the Larson reference fails to disclose extracting
motion compensation factors, as recited by independent claims 1-8. Specifically, these
claims recite extracting one or more motion compensation factors from the motion data
acquired via the recited sensors, and processing image data based upon extracted motion
compensation factors.

The present application describes that in addition to extracting gating points
retrospectively from the sensor-acquired motion data, motion compensation factors may
also be extracted. See Application, page 18, line 24 to page 19, line 3; see also FIG. 4.
For example, motion compensation factors may include data predicting future motion by
modeling anticipated motion either based on the acquired motion data or based on known
a priori data about a moving organ. See id. The motion modeling may be accomplished
by using both iterative (based directly on motion data) or non-iterative (based on a priori
information) algorithms for optimizing criteria in both spatial and transform domains.
See id. Further, the motion compensation factors may be extracted in addition to, or
instead of, gating points. See id. at page 19, lines 5-24. In other words, the present
application clearly describes motion compensation factors and gating points as being
separate and distinct elements. While motion compensation factors are based on
compensation of motion based on motion modeling algorithms, the gating points are
derived based on intervals within a set multi-input motion data which correspond to an
interval of little or no motion for an organ of interest. See id.

In the rejection of claims 1-8, the Examiner has attempted to correlate the recited
motion compensation factors to "a peak, phase, or rate of a time- varying signal" which,
according to the Larson reference, are extracted from the above discussed timing
information. See Office Action, page 4. Specifically, the Examiner relies on paragraphs
18-19 of the Larson reference, which Applicants have reproduced below:

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
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[0018] The extracted timing information may be processed
to provide temporal correspondence with the motion (e.g.,
a time value representing the time at which the motion
begins or the time of another event during the motion). The
processing may

comprise extracting a peak, phase, or rate of a time-varying
signal.

[0019] The timing information may be used to
retrospectively or prospectively synchronize the MR
imaging data with the motion. The motion of the patient
may be periodic (e.g., the periodic movement of the heart
or lungs). The timing information may comprise a time-
varying signal that varies in value over the period of the
motion. The MR imaging data may be segmented cine
imaging data.

Larson, page 2, paragraphs 18-19. (Emphasis added). These passages, however, appear
to merely discuss the determination of timing intervals by assigning time values
representing various points of time (e.g., corresponding to the above discussed peaks,
phases, and rates of change) in the timing information which indicate to where motion
begins to occur. The Larson reference further describes that the time intervals may be
used to retrospectively synchronize the MR imaging data with the motion. See Larson,
paragraphs 18-19. However, nothing in the reference appears to suggest that the peak,
phase and rate of signal-change information is used to compensate for motion. Instead,
the Larson reference, at best, appears to merely describe analyzing the timing information
extracted from the MR imaging data to identify the peaks, phase, or rate of the time-
varying signal, which may be used to align the MR imaging data with the motion of the
organ of interest. Applicants remind the Examiner once again that pending claims must
be given an interpretation that is reasonable and consistent with the specification. See In
re Prater, 162 U.S.P.Q. 541, 550-51 (C.C.P.A. 1969); In re Morris, 44 U.S.P.Q.2d 1023,
1027-28 (Fed. Cir. 1997).

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With this in mind, Applicants submit that the mere determination of peaks and
phases of the timing signal extracted from the MR imaging data, as disclosed by Larson,
does not appear to be consistent with the application's definition of extracting motion
compensation factors which, as discussed above, may include data predicting future
motion by modeling anticipated motion, either iteratively or non-iteratively, based on the
acquired motion data or based on known a priori data about a moving organ. See
Application, page 18, line 24 to page 19, line 3. The application further states that the
motion compensation factors may be extracted in addition to or instead of the gating
points. See id. This clearly indicates that the recited gating points and motion
compensation factors are independent and separate from each other. However, as
discussed above, the Examiner appears to have correlated the timing information (e.g.,
from which the peak, phase, and rate information is extracted) to the recited gating points.
Thus, even assuming this correlation is correct, the disclosed peaks, phases, and rate of
change of the timing signal could not be independent from the timing information since
the Larson reference clearly indicates that they are derived from the timing information
itself. Thus, it does not appear that peaks, phases, and rate information could reasonably
constitute the recited motion compensation factors.

Still further, Applicants note that even if the peaks, phases, and rate of the time-
varying signal information could be considered as motion compensation factors, claims 1-
8 would still require that the motion compensation factors are extracted from the recited
motion data which is acquired via the recited sensors. In stark contrast, the Larson
reference makes it clear that this information is extracted from the timing information
which, as discussed above, is clearly extracted from the image data acquired via the MR
imager. Thus, contrary to the Examiner's assertions, these peaks, phase, and rate of
change information are ultimately derived from the image data acquired via the MR
imager of Larson, not motion data, as would be required to anticipate claims 1-8.
Accordingly, Applicants submit that the Larson reference fails to disclose the recited
motion compensation factors.

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
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In view of the numerous deficiencies described above, among others, Applicants
believe that the Larson reference clearly fails to disclose all the recited elements of
independent claims 1-8. Accordingly, no prima facie case of anticipation is believed to
exist with regard to independent claims 1-8 in view of the Larson reference. As such,
Applicants respectfully request withdrawal of the rejection under Section 102 and
allowance of claims 1-8.

Claim Rejections Under 35 U.S.C. §103

In the Final Office Action, the Examiner rejected claims 9-32 under 35 U.S.C.
§ 103(a) as being unpatentable over the Larson reference in view of the Rogers reference.
Applicants respectfully traverse this rejection.

Legal Precedent

The burden of establishing a prima facie case of obviousness falls on the
Examiner. Ex parte Wolters andKuypers, 214 U.S.P.Q. 735 (PTO Bd. App. 1979). The
Examiner must not only show that the combination includes all of the claimed elements,
but also a convincing line of reason as to why one of ordinary skill in the art would have
found the claimed invention to have been obvious in light of the teachings of the
references. Ex parte Clapp, 227 U.S.P.Q. 972 (B.P.A.I. 1985). In addressing
obviousness determinations under 35 U.S.C. §103, the Supreme Court in KSR
International Co. v. Teleflex Inc., No. 04-1350 (April 30, 2007), reaffirmed many of its
precedents relating to obviousness including its holding in Graham v. John Deere Co.,
383 U.S. 1 (1966). In KSR, the Court also reaffirmed that "a patent composed of several
elements is not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art." Id. at 14. In this regard, the KSR court stated that
"it can be important to identify a reason that would have prompted a person of ordinary
skill in the relevant field to combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely upon building blocks long

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since uncovered, and claimed discoveries almost of necessity will be combinations of
what, in some sense, is already known." Id. at 14-15. In KSR, the court noted that the
demonstration of a teaching, suggestion, or motivation to combine provides a "helpful
insight" in determining whether claimed subject matter is obvious. KSR, slip op. at 14.

Further, when prior art references require a selected combination to render
obvious a subsequent invention, there must be some reason for the combination other
than the hindsight gained from the invention itself, i.e., something in the prior art as a
whole must suggest the desirability, and thus the obviousness, of making the
combination. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 5 U.S.P.Q.2d 1434
(Fed. Cir. 1988). One cannot use hindsight reconstruction to pick and choose among
isolated disclosures in the prior art to deprecate the claimed invention. In re Fine, 837
F.2d 1071, 5 U.S.P.Q.2d 1596 (Fed. Cir. 1988). The Federal Circuit has warned that the
Examiner must not, "fall victim to the insidious effect of a hindsight syndrome wherein
that which only the inventor taught is used against its teacher." In re Dembiczak, F.3d
994, 999, 50 U.S.P.Q.2d 52 (Fed. Cir. 1999) (quoting W.L. Gore & Assoc., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 U.S.P.Q. 303, 313 (Fed. Cir. 1983)).

Claims 9-16

Independent claims 9-16 are directed towards various methods and systems, as
well as computer readable media storing a computer program, all of which reflect various
embodiments of the present invention. Applicants note, however, that claims 9-16 each
commonly recite the acquisition of image data and the acquisition of motion data for a
respiratory organ (e.g., a lung) using both electrical and non-electrical sensor-based
measurement systems. Applicants respectfully submit that the Larson and Rogers
references, alone or in combination, do not appear to teach or suggest this feature.

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As discussed above, the Larson reference generally discloses the use of an MR
imager for acquiring image data. In view of Applicants' above discussion, an MR imager
could not be reasonably construed as a sensor. Instead, the only sensor-based
measurement system disclosed in the Larson reference appears to be an ECG for
measuring cardiac data for a heart, which clearly does not qualify as a respiratory organ.
See Larson, paragraph 63. Moreover, while the Rogers reference, which the Examiner
cited in combination with Larson, does appear to discuss the use of pressure transducers,
acoustic microphones, piezoelectric crystal transducers, strain gauges, and air flow meters
for measuring cardiac or respiratory motion, Applicants note that these devices are all
non-electrical sensors. See Rogers, col. 5, lines 53-63. That is the underlying
phenomena (pressure, acoustics, strain, air flow) measured by such devices are all non-
electrical in nature, a fact readily acknowledged by the Examiner. See Final Office
Action mailed 6/20/2007, page 7, lines 7-8 (the Examiner stating that a pressure
transducer, acoustic microphone, and piezoelectric crystal transducer are all non-electrical
devices).

The Rogers reference does briefly mention that an RF-coil may be used for
acquiring respiratory motion data. See Rogers, col. 5, lines 59-61. Although an RF coil
may be regarded as electrical in nature, Applicants submit that it is well known in the art
that an RF coil is a component of an MR imaging device . Indeed, the Rogers reference
clearly states that the RF coils are being discussed in the context of "[p]hysiological
processes that would be suitable for synchronization by an MRI scanner." Rogers, col. 5,
lines 49-65. In other words, an RF coil is merely a component of an MR imaging system
which is used to acquire imaging information. However, given the proper claim
interpretation discussed above with regard to claims 1-8, the RF coil is still part of an
image-based device for acquiring the respiratory data, not a sensor-based device as
suggested by the Examiner. That is, the Examiner cannot simply point to a component of
the MR imager to satisfy the recited electrical sensor of claims 9-16 when the plain
language of the claims recites the imager and the sensor as separate structures.

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Accordingly, Applicants submit that the combination of the Larson and Rogers
references, at best, only disclose the use of non-electrical sensors for acquiring respiratory
motion data. For at least this reason, the Larson and Rogers references, taken alone or in
combination, cannot render obvious claims 9-16.

Claims 17-24

Independent claims 17-24 are directed towards various methods and systems, as
well as computer readable media storing a computer program, all of which reflect various
embodiments of the present invention. Applicants note, however, that claims 17-24 each
commonly recite the concurrent acquisition of cardiac motion data via at least one non-
electrical sensor and respiratory motion data via at least one non- electrical or electrical
sensor. Applicants respectfully submit that the Larson and Rogers references, alone or in
combination, do not appear to teach or suggest this feature.

As discussed above with regard to independent claims 1-8, the only sensor
disclosed by the Larson reference is an ECG for measuring cardiac data. As the
Examiner will appreciate, an ECG is a well known electrical sensor. In an attempt to
remedy this deficiency of the Larson reference, the Examiner further relies on the Rogers
reference which, as discussed above, does appear to contemplate the use of non-electrical
sensors for acquiring cardiac data. Specifically, the Examiner alleged that a person
skilled in the art would find such a combination desirable "because it avoids the problem
of interference between the [electrical] cardiac motion sensors and the magnetic field of
the MR imaging system." Office Action, page 5. Applicants respectfully disagree.
Instead, the Examiner's proposed combination of these references appears to be based on
impermissible hindsight, which is insufficient to support a prima facie obviousness
rejection. That is, when prior art references require a selected combination to render
obvious a subsequent invention, there must be some reason for the combination other
than the hindsight gained from the invention itself, i.e., something in the prior art as a

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whole must suggest the desirability, and thus the obviousness, of making the
combination. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 5 U.S.P.Q.2d 1434
(Fed. Cir. 1988).

With the foregoing in mind, Applicants respectfully submit that a person skilled in
the art considering these two references would not find it obvious to replace the electrical
sensor (e.g., ECG) of the Larson reference with any of the non-electrical sensors (e.g.,
pressure transducer, acoustic microphone, etc.) disclosed by the Rogers reference. As
discussed above, the Larson reference is generally concerned with the synchronization of
MR imaging data to a set of motion data. See Larson, paragraph 1 . In accordance with
prior art techniques, motion data, such as that acquired via an ECG, is typically acquired
concurrently with the MR imaging data. See id. at paragraph 3. However, such a
technique is not without drawbacks. For instance, one of the problems addressed in the
teachings of the Larson reference is with regard to the interference faced by ECG devices
when used in conjunction with magnetic fields generated by MR imaging systems. See
Larson, page 3. Such interference may render it necessary during MR imaging to relocate
the electrodes on a patient's body in order to acquire a viable ECG signal. See id.
Undesirably, this typically requires that MR image acquisition be stopped, and the patient
withdrawn from the bore of the MR unit. See id. To address this drawback, the Larson
reference offers a solution in which the use of sensors for acquiring motion data is
completely obviated . Specifically, Larson offers a technique in which the desired motion
data is extracted directly from the image data itself, such as via analyzing raw k-space or
transformed k-space data. See id. at paragraph 17. For instance, Larson teaches that
"respiratory motion information can be extracted directly from the MR data" without the
need for sensors. Id. at paragraph 14. Advantageously, with regard to one embodiment,
the Larson reference specifically states that "timing signals can be derived from fetal MR
data to avoid the complexity of measuring a fetal ECG " Id. at paragraph 15.

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 36

Therefore, although the Examiner is correct in stating that interference between
electric sensors and magnetic fields generated by MR imaging systems is an undesirable
problem in the prior art, the solution offered in the teachings of the Larson reference
would clearly obviate the need to substitute the ECG with a non-electrical sensor and
thus, one skilled in the art would not find it obvious nor necessary to combine the two
references in the manner proposed by the Examiner in solving the problem addressed by
Larson. Indeed, contrary to the Examiner's assertions, there is nothing in the Larson
reference which would appear to suggest that non-electrical sensors would be desirable in
place of or in conjunction with electrical sensors. That is, the Larson reference aims to
remove the complexity of dealing with sensors while performing image acquisition.
Adding non-electrical sensors in place of or in conjunction with electrical sensors does
not remove the complexity involved in acquiring motion and image data concurrently, as
noted via Larson, but may in fact exacerbate it.

Instead, Applicants assert that the Examiner's proposed combination is based on
impermissible hindsight reconstruction, in which the Examiner has simply picked and
chosen from isolated disclosures in the prior art to deprecate the claimed invention. In re
Fine, 837 F.2d 1071, 5 U.S.P.Q.2d 1596 (Fed. Cir. 1988). Accordingly, Applicants
respectfully traverse the Examiner's proposed combination of Larson and Rogers with
regard to this subject matter and believe that no prima facie case of obviousness has been
established.

Claims 25-32

Independent claims 25-32 are directed towards various methods and systems, as
well as computer readable media storing a computer program, all of which reflect various
embodiments of the present invention. Applicants note, however, that claims 25-32 each
commonly recite the acquisition of image data via an MRI system, a PET system, a
nuclear imaging system, an X-ray system a PET-CT system, or an ultrasound system
concurrently with the acquisition of motion data for a heart from at least one electrical

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 37

sensor and at least one non-electrical sensor. Applicants respectfully submit that the
Larson and Rogers references, alone or in combination, do not appear to teach or suggest
this feature.

As discussed above, the Larson reference does disclose an MR imager and the use
of an electrical sensor (e.g., ECG) to acquire cardiac (e.g., heart) data. However, the
Larson reference fails to also disclose the concurrent acquisition of cardiac data using
non-electrical sensors as well. To remedy this deficiency, the Examiner again relies on
the Rogers reference for the teaching of non-electrical sensors for acquiring cardiac
motion data. As discussed above, however, the Examiner's combination of Larson
reference with the Rogers reference appears to be based on impermissible hindsight, as
the technique of deriving motion data directly from MR imaging data would clearly
obviate the need for additional sensors, either in conjunction with or in place of an ECG.
Thus, for the same reasons discussed above with regard to independent claims 17-24,
Applicants respectfully traverse the Examiner's hindsight combination of Larson and
Rogers with regard to this subject matter and believe that no prima facie case of
obviousness has been established.

Additional Features Common to Claims 9-32 Omitted from the Cited References

Although Applicants believe that the Examiner's Section 103 rejections of the
claim groups 9-16, 17-24, and 25-32 are deficient for at least the specific reasons set forth
above, Applicants further submit that the Larson and Rogers references, alone or in
combination, fail to teach or suggest several additional features commonly recited in all
of these claims. Specifically, Applicants note that each of these claims recites the
extraction of two or more retrospective gating points and one or more motion
compensation factors from the recited motion data acquired via sensors.

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 38

Extracting Retrospective Gating Points from the Motion Data Acquired via Sensors

As discussed above with regard to independent claims 1-8, the Examiner appears
to have correlated the timing information extracted directly from MR image data, as
taught by Larson, to the recited "two or more retrospective gating points." For instance,
with regard to one particular embodiment disclosed by Larson, the timing information
may be extracted from the analysis of k-space image data itself. However, the k-space
image data is clearly acquired via an imager, not a sensor. Therefore, the extraction of the
timing information, which it appears the Examiner has equated with retrospective gating
points, could not be reasonably construed as being extracted from motion data acquired
via sensors, as would be required to anticipate or render obvious claims 9-32. Further,
the Rogers reference, upon which the Examiner has relied on for the teaching of non-
electric sensors alone, does not appear to cure this deficiency. As such, Applicants do not
believe that the Larson or Rogers references, taken alone or in combination, can render
obvious claims 9-32 with regard to this subject matter.

Motion Compensation Factors

As discussed above, the Larson reference also does not appear to discuss
extracting motion compensation factors from motion data acquired via sensors. The
Larson reference is generally directed towards the direct extraction of motion data via
analyzing MR image data, thus obviating the need for acquiring motion data via sensors.
Based on the analysis of the MR image data, timing information, which the Examiner has
correlated with retrospective gating points, may be extracted. The Larson reference
further discloses that the peak, phase, and rate information may be extracted from the
timing information to align the image data with the motion of the target organ of interest.

As discussed above, the Examiner alleged that the extracted peak, phase and rate
information, as taught by Larson, constitutes the recited motion compensation factors.
However, for the reasons discussed above with regard to claims 1-8, Applicants do not
agree that such peak, phase, and rate information constitutes motion compensation factors

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 39

For instance, the specification of the present application defines motion compensation
factors as data predicting future motion by modeling anticipated motion, either iteratively
or non-iteratively, based on the acquired motion data or based on known a priori data
about a moving organ. This definition does not appear to be consistent with the Larson
reference, which appears to merely suggest that the peak, phase, and rate information may
be used to temporally align the image data with the motion of the organ, but does not
appear to discuss motion compensation. See Larson, paragraphs 18-19.

However, even assuming that the peaks, phases, and rate of the time-varying
signal information could be considered as motion compensation factors, claims 9-32
would further require that these alleged motion compensation factors are extracted from
the motion data which is acquired via sensors. Specifically, claims 1-8 recite extracting
one or more motion compensation factors from the motion data acquired via the recited
sensors, and processing image data based upon extracted motion compensation factors.
In stark contrast, the Larson reference makes it clear that this information is extracted
from the timing information which is extracted from the image data acquired via the MR
imager. Thus, contrary to the Examiner's assertions, these peaks, phase, and rate of
change information are ultimately derived from the image data acquired via the MR
imager of Larson, not from sensor acquired motion data. The Rogers reference, upon
which the Examiner has relied on for the teaching of non-electric sensors, does not appear
to cure this deficiency. As such, Applicants do not believe that the Larson or Rogers
references, taken alone or in combination, can render obvious claims 9-32 with regard to
this subject matter.

In view of the numerous deficiencies described above, among others, Applicants
believe that no combination of the Larson or Rogers references can properly establish a
prima facie case of obviousness with regard to independent claims 9-32. As such,
Applicants respectfully request withdrawal of the rejection under Section 103 and
allowance of claims 9-32.

Application No. 10/723,894
Response to Office Action
Mailed on February 21, 2008
Page 40

Conclusion

In view of the remarks and amendments set forth above, Applicants respectfully
request allowance of the pending claims. If the Examiner believes that a telephonic
interview will help speed this application toward issuance, the Examiner is invited to
contact the undersigned at the telephone number listed below.

Respectfully submitted,

Date: May 16, 2008 /John Rariden/

John M. Rariden
Reg. No. 58,344
FLETCHER YODER
P.O. Box 692289
Houston, TX 77269-2289
(281)970-4545